Hewlett-Packard (Canada) Ltd., and X-Ray and
Radium Limited (Appellants)
v.
Burton Parsons Chemicals, Inc. and Burton Par
sons and Company of Canada Limited
(Respondents)
Court of Appeal, Jackett C.J., Thurlow J. and
MacKay D.J.—Toronto, March 7, 8 and 9;
Ottawa, April 11, 1973.
Patents—Validity—Emulsion used in making cardio-
grams—Claim not stating essential limitation—Whether limi
tation to be inferred from specifications—Patent Act, s.
36(1) and (2).
Respondents sued appellants for infringement of a patent
for an emulsion applied to the human body in making
electrocardiograms. Appellants contended that the claims in
the patent went beyond the invention because they would
include products that would not be compatible with normal
skin and not readily usable because they were either too
liquid or too solid. Respondents countered that the claims
when read with the specifications implied to persons skilled
in the art a limitation on the choice of emulsions.
Held, reversing Noël A.C.J., (MacKay D.J. dissenting) the
claims were invalid and the action for infringement must be
dismissed.
Per Jackett CJ. and Thurlow J.: If a disclosure clearly
indicates a certain feature to be essential to an invention (in
this case a limitation on the emulsion), a claim is invalid if it
omits that feature.
B.V.D. Co. v. Canadian Celanese Ltd. [1936] S.C.R.
221; Minerals Separation North American Corp. v.
Noranda Mines Ltd. (1952) 49 R.P.C. 81; Electric and
Musical Industries Ltd. v. Lissen Ltd. (1938) 56 R.P.C.
23; Norton and Gregory Ltd. v. Jacobs (1937) 54 R.P.C.
271, applied; Metalliflex Ltd. v. Rodi & Wienenberger
Aktiengesellschaft [1961] S.C.R. 117; Henriksen v.
Tallon Ltd. (1965) R.P.C. 434, distinguished.
Per MacKay D.J. dissenting: Properly construed, the
claims in the patent were limited to substances compatible
with the human skin and which can be readily applied and
removed.
APPEAL from Noël A.C.J.
COUNSEL:
D. F. Sim, Q.C., and R. Hughes for
appellants.
D. J. Wright, Q.C., and D. Plumley for
respondents.
SOLICITORS:
D. F. Sim, Toronto, for appellants.
Wright, Ridout and Maybee, Toronto, for
respondents.
JACKETT C.J.—This is an appeal from a judg
ment for the plaintiffs in an action in the Trial
Division for infringement of Letters Patent
under the Patent Act, and an appeal from a
judgment dismissing a counterclaim for
impeachment.
When making cardiograms and similar read
ings, it is usually necessary to treat the parts of
the human body to which the electrodes of the
equipment are attached so as to improve the
passage of electric current between the body of
the patient and the equipment. Prior to the
invention that is the subject matter of the patent
in suit, this treatment was effected with sub
stances having disagreeable characteristics. At
that time, it would seem to have been reason
ably obvious that the disagreeableness could be
eliminated by the use of a creamy substance
with a base of emulsified material, but such a
substance was not in fact used at that time
because, even if it had occurred to somebody
concerned in such matters to try such a cream,
the idea would have been rejected because it
was thought that the introduction of the salt
necessary to make the substance act as an elec-
trical conductor would make the emulsion break
down.
Jellies and pastes used for the purpose in
question prior to the invention under considera
tion frequently contained salt in large quantities
and, in large quantities, the salt would make an
emulsion break down..
On November 21, 1961, Patent No. 631,424
was granted for the invention in suit. That
patent teaches inter alia that, when a salt of a
certain class is used, with a base of emulsified
material, in quantities between 1 per cent. and
10 per cent. of the whole, the desired character
istic of the product as a conductor of electric
current will be achieved without causing the
emulsion to break down. The result is that,
when such a product appropriate for use on the
human body is created with a sufficiently
creamy consistency so that it can be readily
applied and sufficiently thick so that it will not
run when applied, it is an adequate substitute
for the substances previously used and has none
of the disagreeable characteristics of such sub
stances. In effect, as I read it, what this patent
disclosed was a product having the following
characteristics:
(a) it had a base of an emulsified material, of
which several were indicated by the
disclosure,
(b) it contained an appropriate salt, of which
several were indicated by the disclosure,
forming 1 per cent. to 10 per cent. of the
ultimate product, and
(c) it had a consistency such that it could be
readily applied to the human body but would
not run when so applied.
In 1965, there was a petition for a re-issue of
Patent No. 631,424 and, pursuant to that peti
tion, on May 24, 1966, Patent No. 734,862 was
granted as a re-issue of Patent No. 631,424.
While the disclosure in the re-issue patent dif
fers somewhat from the disclosure in the origi
nal patent, the differences are not, in my view,
material to the problem that I find that I have to
consider. Certain claims that were in the original
patent are not carried into the re-issue patent,
many of the claims in the original patent are
carried into the re-issue patent unchanged, and,
in addition, certain new claims are included in
the re-issue patent.
The action giving rise to the judgments
appealed from was an action for infringement of
Claims 3, 4, 5, 11, 12, 13, 17, 18, 19, 21 and 22
of the re-issue patent by the sale in Canada of a
cream that does fall within one or more of those
claims. The only real defence to the action, at
least on this appeal, is that the claims in ques
tion are invalid. There is, moreover, an appeal
from the judgment dismissing the counterclaim
for impeachment but all that the appellant seeks
on the counterclaim is a judgment impeaching
the claims on which the infringement action is
based.
The appellants' attacks on the validity of the
re-issue patent fall under three main headings,
namely,
(a) they contend that the original patent was
invalid, and the re-issue patent is, therefore,
invalid;
(b) they contend that the requirements of sec
tion 50 of the Patent Act for the issuance of a
re-issue patent were not complied with, and
the re-issue patent is, therefore, invalid; and
(c) they contend that the re-issue patent itself
is invalid.
As I have concluded that one of the attacks
on the validity of the re-issue patent must suc
ceed, it is unnecessary for me to consider the
other attacks on that patent or the attacks on
the original patent and the re-issue proceeding.
Before turning to the attack that, in my view,
must succeed, I should indicate that, as I under
stand it, there is no real dispute that the specifi
cations of the patents do disclose an invention.
In my view, the nub of the invention is revealed
by the disclosure that when certain salts are
used with an emulsion to the extent of not less
than 1 per cent. and not more than 10 per cent.
of the ultimate product, they will give to the
resultant product the necessary characteristic of
electrical conductivity without causing the
emulsion to break down, so that when such a
product is also appropriate for use on the
human body and is made of such a consistency
that it can be readily applied to the human body
without running after it has been so applied, it is
a substance that can be used in making cardio
grams that is definitely superior to the sub
stances previously used for that purpose.
In my view, the claims in suit are invalid
because they do not comply with subsection (2)
of section 36 of the Patent Act, which provision
must be read in its context in sections 35 and 36
of the Patent Act. Those sections read as
follows:
35. The applicant shall, in his application for a patent,
insert the title or name of the invention, and shall, with the
application, send in a specification in duplicate of the inven
tion and an additional or third copy of the claim or claims.
36. (1) The applicant shall in the specification correctly
and fully describe the invention and its operation or use as
contemplated by the inventor, and set forth clearly the
various steps in a process, or the method of constructing,
making, compounding or using a machine, manufacture or
composition of matter, in such full, clear, concise and exact
terms as to enable any person skilled in the art or science to
which it appertains, or with which it is most closely connect
ed, to make, construct, compound or use it; in the case of a
machine he shall explain the principle thereof and the best
mode in which he has contemplated the application of that
principle; in the case of a process he shall explain the
necessary sequence, if any, of the various steps, so as to
distinguish the invention from other inventions; he shall
particularly indicate and distinctly claim the part, improve
ment or combination which he claims as his invention.
(2) The specification shall end with a claim or claims
stating distinctly and in explicit terms the things or combina
tions that the applicant regards as new and in which he
claims an exclusive property or privilege.
When a patent is ultimately granted, it is
granted by reference to the specification provid
ed for in sections 35 and 36. See section 46 of
the Patent Act.
What subsection (1) of section 36 requires is
that the applicant for a patent fully describe his
invention in the specification in such a way that
a person skilled in the art may make use of it
and that he particularly indicate and distinctly
claim "the part, improvement or combination"
that he claims as his invention. After the appli
cant .has so described his invention and has, as
required by section 36(1), indicated and claimed
the part, improvement or combination that he
claims as his invention in the part of the specifi
cation usually referred to as the disclosure, sec
tion 36(2) requires that he put at the end of the
specification one or more formal "claims" stat
ing distinctly and in explicit terms "the things or
combinations" that he regards as new "and in
which he claims an exclusive property or
privilege".
It is trite law that the formal claims put at the
end of a specification pursuant to section 36(2)
define the ambit of the monopoly to which the
inventor becomes entitled when a patent is
granted to him. If those claims are so expressed
as to include less than the invention disclosed
by the specification, the grant of the patent will
give the patentee no rights in what has been
omitted from the claims. If, on the other hand,
one of those claims is so expressed as to include
something in addition to the applicant's inven
tion as disclosed by the specification, that claim
will be invalid in its entirety.'
As already indicated, one of the components
of the substance that is the subject matter of the
re-issued patent is an emulsified material or an
emulsion. This component is described in the
claims in suit as "an aqueous solution of an
emulsified material of a non-ionic type" (Claims
3, 4, 5, 11, 12 and 13) or "a stable aqueous
emulsion that is anionic, cationic or non-ionic"
(Claims 17, 18, 19, 21 and 22). It will be suffi
cient, for my purposes, to refer to two claims.
Claim 3 reads as follows:
3. The method of making an electrically conductive
system for use in making electrocardiograms, electroen
cephalograms and the like, comprising providing an aque
ous solution of an emulsified material of a non-ionic type;
controlling the electrical conductivity thereof by adding a
highly ionizable salt; and adding a buffer solution to
provide a pH of between substantially 4 to 8.
Claim 17 reads as follows:
17. An electrocardiograph cream for use with skin con
tact electrodes and compatible with normal skin, compris
ing a stable aqueous emulsion that is anionic, cationic or
non-ionic and containing sufficient highly ionizable salt to
provide good electrical conductivity.
Read literally, each of these claims extends to
every product made with an emulsion that falls
within the words of the claim (in combination
with the other required component or compo
nents) regardless of its concentration although it
is clear from the evidence of the respondents'
expert that such products would include, in
addition to products constituting the invention
disclosed by the specification, products that
would not be "compatible" with the normal skin
and products that would not be readily useable
because they would be either so liquid as to run
off the area of application or too solid for
convenient application? If, therefore, the words
of the claims are to be read literally, this is a
case of claims that are invalid because they
claim things that fall outside the scope of the
invention made and disclosed by the inventor.
Counsel for the respondents conceded, as I
understood him, that, if there is no limitation on
the emulsions that may be used other than that
found in the words "an aqueous solution of an
emulsified material of a non-ionic nature" or the
words "a stable aqueous emulsion that is anion-
ic, cationic or non-ionic", the claims are bad for
claiming more than the invention disclosed. In
effect, as I understand it, the respondents'
answer to this ground of attack is that the
claims, properly interpreted, do not claim in
respect of materials made with any such emul
sion or aqueous solution of an emulsified
material but only in respect of materials made
with certain of those emulsions that are selected
because they will give the product the charac
teristics required to fulfill the promise of the
invention.
What the respondents say, as I understand it,
is that the words in the claims must be read with
the disclosure and that, when so read, it will be
apparent to any person skilled in the art, that
the claims must be read as implying certain
limitations on the choice of type and concentra
tion of emulsified material to be employed.' If
that is the correct way of reading the claims,
and if the limitations on the choice of type and
concentration of emulsified material to be
employed are such as to require the choice of a
type and concentration that will produce only
the invention disclosed by the specification,
there is a sufficient compliance with section
36(2).
The part of the specification that precedes the
claims is not long and, in fairness to the
respondents' argument, I reproduce it in its
entirety:
The present invention relates to electrically conductive
systems, and particularly to a new and improved system for
use with electrodes in making cardiograms.
Different parts of the surface of the body have different
resistances to the passage of electric current. Some skin
may be dry and thick, whereas other skin may be moist and
thin. Still other skin may be oily, and the degree of hair on
skin varies widely. All of these skin characteristics act to
vary the passage of electric current from the body of a
patient to electrocardiographic or electroencephalographic
equipment thereby providing erratic tracings.
An object of this invention is to provide an electrically
conductive system that will be readily applied and readily
removed without any resulting condition requiring cleansing.
Another object of the invention is to provide such a
system that will not only cleanse the skin, but will provide
high conductivity between the skin and electrocardiographic
electrodes.
Another object of the invention is to provide such a
system which, when applied to the body of a patient, is
compatible with normal skin whereby contact dermatitis is
lessened.
Another object of this invention is to provide such a
system in which the growth of bacteria, molds or yeast in
the system can be inhibited.
One aspect of this invention is to provide an aqueous
system that includes a base of emulsified material of an
anionic, cationic, or non-ionic type.
Another aspect of the invention is to include with said
base a salt suitable to act as a conductor for the passage of
electric current from an electrode to the body of a patient.
Still another aspect of the invention may be to employ a
buffer solution with the system in order to provide the
degree of acidity corresponding substantially to the acid
mantle of the body skin.
Finally, inhibitors for preventing the growth of bacteria,
molds or yeast may be included, although such inhibitors
may be dispensed with if the system is packaged in a
pressure dispensing container of the type commonly known
as "aerosol" packages.
The above as well as other objects and novel features of
the invention will become apparent from the following
specification.
The base of the system forming this invention comprises
an aqueous system of an emulsified material, i.e., an emul
sion, which may be of an anionic, cationic, or non-ionic
type. Such non-ionic materials may be selected from the
group including polyglycol fatty acids, Spans' and Tweens 2 ,
glyceryl monostearate and the like.
The desired conductivity of the system may be produced
by using a salt suitable to act as a conductor of electricity
from an electrode to the body of a patient, such for example
as:
Sodium Chloride 1 - 10%
Potassium Chloride 1 - 10%
Sodium Sulfate 1 - 10%
or other highly ionizable salt in concentrations to achieve
suitable conductivities.
Although the emulsion, consisting of an aqueous system
of an emulsified material, and a highly ionizable salt may be
employed alone, should it be desired to produce a pH in the
system that will correspond substantially to the acid mantle
of the bodily skin, any one of many buffer solutions may be
utilized, among which may be included a sodium citrate, a
citric acid, or a phosphate buffer solution. The amount of
buffer solution employed should be such as to produce a pH
of between substantially 4 to 8.
Should the system be packaged in containers that are
opened to the atmosphere during use, means may be
required to prevent the growth of bacteria, molds or yeast.
Such materials as esters of para -hydroxy benzoic acid or
other suitable inhibitors may be employed. Should, however,
the emulsion be packaged in a pressure dispensing container
of the type known as "aerosol" packages, the above inhibi-
tors may not be required.
Examples of stable emulsions embodying the principles of
this invention are:
Non-ionic Percentage
Non-ionic blend of ethylene oxide derivatives
of lanolin, the derivatives being higher fatty
alcohols 6.0
Cetyl alcohol 2.0
Sodium chloride 5.0
Sodium nitrite 0.1
Glycerin 5.0
pH 5 Buffer solution' 81.9
Cationic Percentage
Methylene bis-stearmide 10.0
Stearyl polyoxyethylamine 1.7
Glacial acetic acid 0.3
Sodium chloride 5.0
Sodium nitrite 0.1
Glycerin 5.0
pH 5 Buffer Solution' 77.9
Anionic Percentage
Sodium lauryl sulfate 1.0
Glyceryl monostearate (free from soap) 11.0
Cetyl alcohol 1.0
Sodium chloride 5.0
Sodium nitrite 0.1
Glycerin 5.0
Water, distilled or de-ionized 76.9
The above systems which were of creamy consistency
were packaged by introducing 142 grams of each into six-
ounce containers which were then pressurized to about 90
p.s.i. with nitrogen.
Although the various features of the new and improved
electrically conductive system have been described in detail
to fully disclose several embodiments of the invention, it
will be evident that numerous changes may be made in such
details and certain features may be used without others
without departing from the principles of the invention.
' Cf. T.C. Macllvaine, J. Biol. Chem. 49, 183 (1921); C.J.
Schollenberger, The Chemist-Analyist, 19 No. 3, 8 (1930).
2 "Span" is the registered trademark of Atlas Chemical
Industries, Inc. for a series of non-ionic surface active
agents which are long chain fatty acid partial esters of
hexitol anhydrides, including sorbitans, sorbides, mannitans,
and mannides.
2 "Tween" is the registered trademark of Atlas Chemical
Industries, Inc. for a series of non-ionic surface active
agents which are polyoxy alkylene derivatives of hexitol
anhydride partial long chain fatty acid esters.
In so far as relevant to the ground of attack on
the patent that I am considering, the specifica
tion shows
1. that the invention has for its objects to
provide an "electrically conductive system"
that will be readily applied and removed with
out any resulting condition requiring cleaning,
that will cleanse the skin and provide high
conductivity between the skin and electrocar-
diographic electrodes and that will be compat
ible with the normal skin so that contact der
matitis is lessened;
2. that an aspect of the invention is to pro
vide "an aqueous system that includes a base
of emulsified material of an anionic, cationic,
or non-ionic type";
3. that the base of the system forming the
invention comprises an aqueous system of an
emulsified material, i.e., an emulsion, which
may be of an anionic, cationic, or non-ionic
type. Such non-ionic materials may be select
ed from the group including polyglycol fatty
acids, Spans and Tweens, glyceryl monostea-
rate and the like;
4. examples of "stable emulsions" embody
ing the principles of this invention in which
specific emulsified materials and their propor
tions are specified, and which are stated to
have been "of creamy consistency".
Reading the objects and disclosure of this
specification as carefully as I can, I can find no
indication that the electrically conductive
system that will achieve the promised objects
can only be produced if an appropriate selection
is made from the class of emulsions that is
specified. In the absence of any such teaching in
the disclosure and objects, the required limita
tion on the ambit of the claims cannot be
imported from them even if it would be other
wise permissible to do so.
However, even if there were words in the
specification that taught that a certain choice
must be made from the class of emulsions speci
fied to find an emulsion that will result in the
promised product (and if such teaching were
sufficient to guide a person skilled in the art to
make such choice), I am of opinion that the
omission of any language in the claim indicating
that there is such a limitation on the emulsions
that can be used is fatal to the validity of the
claim.
As I understand the law, even though a dis
closure clearly indicates a certain feature as
being an essential feature of the invention, if
that feature is omitted from a claim, that claim
is invalid. This was laid down by the unanimous
judgment of the Supreme Court of Canada in
The B.V.D. Company, Limited v. Canadian
Celanese Limited [1937] S.C.R. 221 per Davis
J., delivering the judgment of the Court, at
pages 233 et seq., where he reviews the authori
ties at length. In that judgment, at page 233,
Davis J. referred to the fact that, in that case,
one of the essential features of the invention
was referred to throughout the specification and
he asked the question "Why, then, was it left
out of the claims?" Recognizing that the omis
sion might have been "a slip of the draftsman"
or a "deliberate omission", Davis J. reviewed
the authorities and concluded, with reference to
the patent there under consideration, as follows
[at page 237]:
In the Canadian patent involved in this appeal before us
the inventor did not state in his claims the essential charac
teristic of his actual invention though it does appear in the
claims in his British and United States patents. No explana
tion is offered. We are invited to read through the lengthy
specification and import into the wide and general language
of the claims that which is said to be the real inventive step
disclosed. But the claims are unequivocal and complete
upon their face. It is not necessary to resort to the context
and as a matter of construction the claims do not import the
context. In no proper sense can it be said that though the
essential feature of the invention is not mentioned in the
claims the process defined in the claims necessarily pos
sesses that essential feature. The Court cannot limit the
claims by simply saying that the inventor must have meant
that which he has described. The claims in fact go far
beyond the invention. Upon that ground the patent is
invalid.
Counsel for the respondent argues that the
rule that you must find the essential features of
the invention referred to in a claim applies only
where the disclosure has taught that a particular
limitation was not necessary. I have re-read the
authorities of which I am aware in which the
rule has been applied from this point of view
and I can find no indication of any such qualifi
cation on the rule in any decision on appeal.
Indeed, there are several cases, such as the
B.V.D. case itself, where the rule was applied to
prevent quite clear teaching in the disclosure
from being turned into limitations in the claims.
I have reviewed the authorities since the
B.V.D. case and I find no departure from the
basic requirement that a claim contain, in one
way or another, all limitations necessary to
restrict it to the actual invention. In Minerals
Separation North American Corporation v.
Noranda Mines Ld. (1952) 69 R.P.C. 81, Lord
Reid restated the rule at page 95 in a different
context, as follows:
One other ground for excluding the cellulose xanthates
was urged at one stage in this case. It was said that for
various practical reasons no person skilled in the art would
ever attempt to use these xanthates for froth flotation, and
therefore they could be disregarded. But Counsel before
their Lordships did not attempt to maintain this argument. It
is well settled that, where the scope of a claim includes
some method which is useless, the claim cannot be saved by
showing that no skilled person would ever try to use that
method.
In Electric and Musical Industries Ld. v. Lissen
Ld. (1939) 56 R.P.C. 23 at page 39, Lord Rus-
sell of Killowen stated the general principle as
follows:
The function of the claims is to define clearly and with
precision the monopoly claimed, so that others may know
the exact boundaries of the area within which they will be
trespassers. Their primary object is to limit and not to
extend the monopoly. What is not claimed is disclaimed.
The claims must undoubtedly be read as part of the entire
document, and not as a separate document; but the forbid
den field must be found in the language of the claims and
not elsewhere. It is not permissible, in my opinion, by
reference to some language used in the earlier part of the
specification to change a claim which by its own language is
a claim for one subject-matter into a claim for another and a
different subject-matter, which is what you do when you
alter the boundaries of the forbidden territory. A patentee
who describes an invention in the body of a specification
obtains no monopoly unless it is claimed in the claims. As
Lord Cairns said, there is no such thing as infringement of
the equity of a patent (Dudgeon v. Thomson, L.R. 3 App.
Cas. 34).
Finally, there is a judgment that decides a ques
tion that, in my view, is indistinguishable from
the question raised in this case by the refer
ences in the claims to "... an emulsified materi
al ..." and "a stable aqueous emulsion ..."
even though there are some that will not work. I
refer to Norton and Gregory Ld. v. Jacobs
(1937) 54 R.P.C. 271 where the claim read [at
page 276]:
I. A process for making diazo-types by exposing under a
transparent original a layer containing a diazo-compound
decomposable by light, and then developing, wherein there
is present in the finished picture a reducing agent. [The
underlining is mine.]
In that case there were reducing agents that
would not work and Lord Greene said at pages
276-77:
Now if Claim I be read by itself and construed in accord
ance with the ordinary meaning of the language used, it is
apparent that the use of any reducing agent falls within it.
The character of the reducing agent to be used is not defined
by reference to any particular quality or any particular
result. If the matter stood there, the Claim would be unques
tionably bad. But it is said (and this is the substantial part of
the Appellant's argument) that the language of the Claim
must be construed so as to exclude any reducing agent
which a chemist of ordinary skill would know, with or
without experiment, to be unsuitable in view of the result to
be achieved. We are unable to accept this argument. The
fact that a skilled chemist desiring to use the invention
would reject certain reducing agents as being unsuitable is
one thing; it is quite a different thing to say that a claim
must in point of construction be cut down so as to exclude
those reducing agents because a skilled chemist would not
use them. To adopt the latter proposition would not be to
construe the Specification but to amend it, and it would, in
our opinion, be mere self-deception to hold otherwise. The
duty of a patentee is to formulate his claim in such a way as
to define with clarity the area of his monopoly; the claim is
the solemn operative part of the Specification in which the
patentee sets himself to achieve that purpose, and in con
struing it, it is of great importance not to lose sight of that
fact. It is illegitimate to whittle away clear words in a claim
by reading into them glosses and limitations extracted from
the body of the Specification whose function is in its
essence different from that of the claim. Each part of the
document must be construed in the light of the function
which is peculiarly its own. In the same way it is in our
opinion illegitimate to whittle away the clear words of the
claim—selected, as they must be taken to be, with the
peculiar function of the claim in mind—by writing into them
glosses and limitations based on the fact that a skilled
chemist would avoid working in part of the area which the
words in their ordinary meaning are wide enough to include.
This does not mean that regard is not to be paid to the fact
that the claim as well as the body of the Specification is
addressed to persons skilled in the art and must be con
strued accordingly. But the argument here goes far beyond
this and, under the pretence of construing the claim, in
reality seeks to reform it.
Counsel for the respondents relied on such
authorities as Metalliflex Limited v. Rodi & Wie-
nenberger Aktiengesellschaft [1961] S.C.R. 117
and Henriksen v. Tallon Ltd. (1965) R.P.C. 434.
Neither of these authorities represents any
departure from the basic rule that the claims
must contain all material limitations nor is there
any suggestion in either of them that it is per
missible to import limitations from the disclo
sure into a claim when there is no indication of
it in the claim itself. In Metalliflex, it was held
that the rule did not apply in that case because
there was no failure to include in the claim all
the essential features of the invention. In Hen-
riksen, the problem was one of deciding what
the words of the claim meant.
In appreciating the ambit of the rule to which
I refer, it is to be kept in mind that it is not in
any way inconsistent with the rule that permits
the use of the disclosure as a dictionary for the
meaning of words in the claims and that it is not
in any way inconsistent with the rule that
requires that the claims be considered against
the background of the state of the art at the time
of the invention and against the background of
what has been disclosed by the rest of the
specification. The basic requirement remains
that, in one way or another, a claim must be so
worded as to limit what is claimed to the inven
tion disclosed . 5
Finally, the respondents argue that Claim 17,
at least, does contain within itself a requirement
that the product be made with an appropriate
emulsion in appropriate proportions. They base
that contention on the fact that what is claimed
is claimed as "An electrocardiograph cream for
use with skin electrodes and compatible with
normal skin" and they say that it is thereby
implied that the materials used must be such as
are appropriate to produce such a substance.
To appreciate why this latter argument cannot
prevail, even if such a choice could be implied
in the absence of any teaching in the disclosure
of the necessity of such a limitation, reference
must be made to the whole claim, which reads
as follows:
17. An electrocardiograph cream for use with skin con
tact electrodes and compatible with normal skin, comprising
a stable aqueous emulsion that is anionic, cationic or non-
ionic and containing sufficient highly ionizable salt to pro
vide good electrical conductivity.
Reading this claim in the only way that I find it
possible to read it, it is a claim that the inventor
has invented a substance that is an invention
because of its new and useful qualities as an
electrocardiograph cream that is for use with
skin contact electrodes and that is compatible
with normal skin and the substance for which
such claim is made is the substance that is
defined by all the words after the word "com-
prising". The word "comprising" separates the
part of the claim that performs the "fencing"
function from the part of the claim that indi
cates what the function of the invention is. If
the words of promise in the first part of the
claim can be taken to limit the ambit of the
invention defined, the public can be, by that
device, completely deprived of the protection to
which it is entitled under section 36(2). In my
view, section 36(2) contemplates the inventor
committing himself to the ambit of his inven
tion; and, while the courts will not be too astute
to strike down any reasonably informative state
ment with regard thereto, it is not a statement of
the new product useful for certain purposes to
define the elements as those members of broad
classes that will result in a product useful for
the designated purposes. I have searched, with
out success, for any case where the necessary
limitations on the elements of the invention
were found to be implied from the objects part
of the claim. On the other hand, the Minerals
Separation case and the Norton and Gregory
cases are examples of cases that would have
gone the other way if this were an acceptable
use of that part of a claim.
In my view, the appeal should be allowed
with costs both here and in the Trial Division,
the judgments appealed from should be set
aside, the action for infringement of the patent
should be dismissed, and there should be judg
ment on the counterclaim declaring Claims 3, 4,
5, 11, 12, 13, 17, 18, 19, 21 and 22 of Patent
734,862 invalid.
* *
THURLOW J.—The principal facts, including
the whole of the disclosure portion of the
specification of the patent in suit are set out in
the reasons of the Chief Justice, which I have
had the opportunity to read, and I need not
repeat them. I wish to emphasize, however, that
in my view of the facts what is disclosed as the
invention is not a means of providing better or
more efficient electrical conduction. The pastes
and jellies in use before the inventor's cream
appeared were, as I read the evidence, as good,
if not better, electrical conductors than the
cream. The advance in the art contributed by
the inventor, as I understand it, lay in the inven
tion of a cream that would provide adequate, if
not as efficient, electrical conductivity but
which was preferable to pastes and jellies
because the necessity to include pumice or grit
for the purpose of rubbing off the top layer of
the skin of the patient to improve the contact
between the electrode and the skin as well as
the necessity to cleanse the areas afterwards
could be eliminated. The relevant objects of the
invention, as set out in the disclosure, and thus
what the invention is to do, are to provide a
system that
(a) will be readily applied and readily
removed without any resulting condition
requiring cleansing;
(b) will not only cleanse the skin, but will
provide high conductivity between the skin
and the electrode; and
(c) will, when applied to the body of a
patient, be compatible with normal skin
whereby contact dermatitis will be lessened.
I am in agreement with the construction
which the Chief Justice has put on the claims
here in question and with his reasons therefor.
His, as I understand it, is the accepted approach
and manner of interpreting patent claims and it
would lead to fantastic results if a person were
permitted for example to claim "a pen that
writes, comprising etc." and thereafter to say
that the claim is valid because all pens that do
not write are outside the claim. The principle
appears to me to be implicit in the following
passage from the judgment of Lord Reid in
Henriksen v. Talion Ltd. (1965) R.P.C. 434 at
page 441, line 26:
I must now analyse and construe claim 1 because it is well
settled that whether the issue be validity or infringement the
first step is to construe the claim. It is addressed to the
skilled man who is acquainted with the prior art, so all
relevant information about that must be supplied to the
court and borne in mind when construing the claim.
The claim is for a fountain pen of the ball tip type. One
argument submitted for the plaintiff was that this includes a
writing instrument which must be kept upright because
otherwise the ink will run out. I do not think that is right.
Fountain pens of the ball tip type were in common use and
there is nothing to show that such a peculiar instrument had
ever been made. Non-technical words must be given their
ordinary meaning and I have no doubt that "fountain pen"
means a pen as commonly understood—a pen which can at
least be laid down flat when not being used for writing. No
question arises about the ball tip, the tubular reservoir or the
air inlet. It is the latter part of the claim which gives rise to
the difficulty.
The patentee is representing to the Crown in seeking the
patent and telling the skilled addressee after its publication
that if the skilled addressee follows his directions he will
produce an instrument that is useful at least in the sense that
it will work. He is entitled within fairly wide limits to leave
it to the addressee to choose appropriate material from a
class which he specifies if he makes it plain that the choice
is left to the addressee. In the present case it is not disputed
that the patentee can properly leave it to the addressee to
choose out of the specified class or classes of material
something which (a) does not mix with the ink and (b) forms
a plug which (i) will move with the surface of the ink and (ii)
will prevent air from contacting the surface of the ink. The
question is what is the class or what are the classes of
material which he has specified. The specification says that
there is to be put between the ink and the air "a liquid or a
viscous or paste-like mass."
When one poses, with respect to the claims
here in suit, the question, what class of materi
als has the inventor specified, the answer seems
to me to be, in the case of claim 3, simply "an
aqueous solution of an emulsified material of a
non-ionic type", and in the case of claim 17,
simply "a stable aqueous emulsion that is anion-
ic, cationic, or non-ionic". In neither case is
there any limitation of the character of such
material by reference to any particular quality
or any particular result. (Vide Lord Greene,
M.R. in Norton v. Gregory (1937) 54 R.P.C. 271
at page 276, line 26.) In particular there is no
limitation to materials that may readily be
removed without any resulting condition requir
ing cleansing or which will cleanse the skin. It
must, therefore, in my opinion, be taken that the
inventor has specified any emulsion that will fall
within the meaning of the expressions used.
The next question that arises is whether on
the facts it has been established that there are
emulsions, falling within the claims as so inter
preted, that will not work.
On this point as well I am in agreement with
the view of the Chief Justice that the evidence
of Dr. Shansky, the expert witness called by the
respondent, shows that there are aqueous solu
tions of emulsified materials of a non-ionic type
and stable aqueous emulsions that are non-ionic
that will not work and that a choice has to be
made of such of the materials specified in
claims 3 and 17 as can be used to provide the
advantages claimed for the invention. The
expressions used in the claims, however, if not
subject to some implied limitation are wide
enough to embrace all such materials whether
they will work or not and I understood it to be
conceded in the course of the argument that if
such materials that will not work fall within the
claims when properly construed the claims are
invalid. The respondent's case on this point was
that when the claims are properly construed the
materials specified do not include any materials
that will not work because the skilled person to
whom the specification is addressed will know
what to select and what to avoid. That proposi
tion, however, appears to me to have been
rejected, at least in so far as the interpretation
of the claim portions of a specification are con
cerned, by the judgment of the Privy Council in
Minerals Separation North American Corpora
tion v. Noranda Mines (1952) 69 R.P.C. 81 at p.
95; 12 Fox P.C. 123 at page 137, where Lord
Reid said:
One other ground for excluding the cellulose xanthates
was urged at one stage in this case. It was said that for
various practical reasons no person skilled in the art would
ever attempt to use these xanthates for froth flotation, and
therefore they could be disregarded. But Counsel before
their Lordships did not attempt to maintain this argument. It
is well settled that, where the scope of a claim includes
some method which is useless, the claim cannot be saved by
showing that no skilled person would ever try to use that
method.
I am therefore of the opinion that the claims
in issue include claims for the use of substances
that will not work and are on that account
invalid.
I would dispose of the appeal as proposed by
the Chief Justice.
* * *
MACKAY D.J.—This is an appeal by the
defendants from the judgment of the Associate
Chief Justice in which he held that the defend
ants had infringed the plaintiff's re-issued patent
No. 734862 and dismissed the defendant's
counterclaim for impeachment of the patent.
The principles that are applicable in determin
ing the validity of patents and their infringement
are stated by the author of Fox on Patents, 4th
edition in part at pages 204, et seq. as follows:
(1) The test of sufficiency of the specification is whether
the persons to whom it is addressed could, by following
the directions therein, put the invention into practice.
(2) The specification is to be read and construed as a
whole.
(3) The specification is construed with reference to public
knowledge at the date of the patent.
(4) There should be neither a benign nor a strict interpre
tation, but if the language is ambiguous the court should
endeavour to arrive at a construction that will support the
patent rather than one that will vitiate it.
(5) The language of the specification should be interpret
ed according to its plain and ordinary meaning except in
the case of technical words which are to be construed
according to the meaning assigned to them by those
skilled in the art to which the invention relates.
To determine whether a specification is sufficient, the
proper test to apply is whether the persons to whom it is
addressed, on reading the specification in the light of the
common knowledge existing at its date and being willing to
understand it, would be unerringly led to the invention and
be enabled to put it to full use. The persons to whom the
specification is addressed are "ordinary workmen",
ordinarily skilled in the art to which the invention relates
and possessing the ordinary amount of knowledge incidental
to that particular trade. The true interpretation of the patent
is to be arrived at by a consideration of what a competent
workman reading the specification at its date would have
understood it to have disclosed and claimed.
It is for the court, when properly instructed, to fill the place
of the workman skilled in the art and a specification must be
construed from its own contents.
In the application of this rule the word "specification"
includes not only the descriptive letterpress, but the claims
and drawings as well, and all should be looked at to ascer
tain what the invention is and whether it has been properly
described and claimed. The body of the specification should
be read first for, regardless of the wording of the patentee's
claims, they must be construed as relating to that which the
patentee has described. The introduction stating the nature
of the invention is to be read along with the specification.
This must be distinguished, however, from the description
itself. As the title has always been an integral part of the
specification it must be read into the specification and
construed with it, and may affect the prior art to be
considered.
If one part of the specification corrects what is obviously an
error in another part, the correction should be so construed
and the error will not render the specification bad.
The real question upon the merits is: What is the true
construction of the specification as it stands?
The court should, therefore, in construing a specification,
be the fair and impartial arbitrator between the patentee and
the public. The construction must be reasonable, fair and
logical, in accordance with the manner of construction of all
written documents according to the true intent. Nothing
should be presumed in favour of the patentee or an alleged
infringer, although it is proper for the court to endeavour to
support a patent if it can be done honestly and fairly and
without improper construction, for it is a reasonable pre
sumption that a patentee would not claim anything that
would render his patent void.
Nevertheless the principle of fair construction must be
applied in such a way as to give effect to the expressed or
necessarily implied intent of the inventor as it would be
understood by the assumed addressee of the patent. And
there is high authority to the effect that it is a general
principle of construction to reject an interpretation that
leads to an absurd result.
Doubt, if any, should be resolved in favour of the paten-
tee. Therefore, where the language is ambiguous and does
not admit of a construction that is beyond doubt, the court
should endeavour to arrive at the true intention and to give a
construction that will uphold the patent rather than one that
will vitiate it, if that construction can be reasonably and
fairly arrived it. The patent should not be construed astutely
but should be approached with a judicial anxiety to support
a really useful invention if it can be supported on a reason
able construction of the patent.
The plaintiff's claim is that the defendants by
the sale in Canada of an electrocardiographic
cream known as "Sanborn Redux creme"
infringed the plaintiff's re-issued patent No.
734862.
The specifications and the relevant claims of
the plaintiff's patent that are in issue are as
follows:
The present invention relates to electrically conductive
systems, and particularly to a new and improved system for
use with electrodes in making cardiograms.
Different parts of the surface of the body have different
resistances to the passage of electric current. Some skin
may be dry and thick, whereas other skin may be moist and
thin. Still other skin may be oily, and the degree of hair on
skin varies widely. All of these skin characteristics act to
vary the passage of electric current from the body of a
patient to electrocardiographic or electroencephalographic
equipment thereby providing erratic tracings.
An object of this invention is to provide an electrically
conductive system that will be readily applied and readily
removed without any resulting condition requiring cleansing.
Another object of the invention is to provide such a
system that will not only cleanse the skin, but will provide
high conductivity between the skin and electrocardiographic
electrodes.
Another object of the invention is to provide such a
system which, when applied to the body of a patient, is
compatible with normal skin whereby contact dermatitis is
lessened.
Another object of this invention is to provide such a
system in which the growth of bacteria, molds or yeast in
the system can be inhibited.
One aspect of this invention is to provide an aqueous
system that includes a base of emulsified material of an
anionic, cationic, or non-ionic type.
Another aspect of the invention is to include with said
base a salt suitable to act as a conductor for the passage of
electric current from an electrode to the body of a patient.
Still another aspect of the invention may be to employ a
buffer solution with the system in order to provide the
degree of acidity corresponding substantially to the acid
mantle of the body skin.
Finally, inhibitors for preventing the growth of bacteria,
molds or yeast may be included, although such inhibitors
may be dispensed with if the system is packaged in a
pressure dispensing container of the type commonly known
as "aerosol" packages.
The above as well as other objects and novel features of
the invention will become apparent from the following
specification.
The base of the system forming this invention comprises
an aqueous system of an emulsified material, i.e., an emul
sion which may be of an anionic, cationic, or non-ionic type.
Such non-ionic materials may be selected from the group
including polyglycol fatty acids, Spans' and Tweens 2 , glyce-
ryl monostearate and the like.
The desired conductivity of the system may be produced
by using a salt suitable to act as a conductor of electricity
from an electrode to the body of a patient, such for example
as:
Sodium Chloride 1 - 10%
Potassium Chloride 1 - 10%
Sodium Sulfate 1 - 10%
or other highly ionizable salt in concentrations to achieve
suitable conductivities.
Although the emulsion, consisting of an aqueous system
of an emulsified material, and a highly ionizable salt may be
employed alone, should it be desired to produce a pH in the
system that will correspond substantially to the acid mantle
of the bodily skin, any one of many buffer solutions may be
utilized, among which may be included a sodium citrate, a
citric acid, or a phosphate buffer solution. The amount of
buffer solution employed should be such as to produce a pH
of between substantially 4 to 8.
Should the system be packaged in containers that are
opened to the atmosphere during use, means may be
required to prevent the growth of bacteria, molds or yeast.
Such materials as esters of para -hydroxy benzoic acid or
other suitable inhibitors may be employed. Should, however,
the emulsion be packaged in a pressure dispensing container
of the type known as "aerosol" packages, the above inhibi-
tors may not be required.
Examples of stable emulsions embodying the principles of
this invention are:
Non-ionic Percentage
Non-ionic blend of ethylene oxide derivatives
of lanolin, the derivatives being higher fatty
alcohols 6.0
Cetyl alcohol 2.0
Sodium chloride 5.0
Sodium nitrite 0.1
Glycerin 5.0
pH 5 Buffer solution' 81.9
Cationic Percentage
Methylene bis-stearmide 10.0
Stearyl polyoxyethylamine 1.7
Glacial acetic acid 0.3
Sodium chloride 5.0
Sodium nitrite 0.1
Glycerin 5.0
pH 5 Buffer Solution' 77.9
Anionic Percentage
Sodium lauryl sulfate 1.0
Glyceryl monostearate (free from soap) 11.0
Cetyl alcohol 1.0
Sodium chloride 5.0
Glycerin 5.0
Sodium nitrite 0.1
Water, distilled or de-ionized 76.9
The above systems which were of creamy consistency,
were packaged by introducing 142 grams of each into six-
ounce containers which were then pressurized to about 90
p.s.i. with nitrogen.
Although the various features of the new and improved
electrically conductive system have been described in detail
to fully disclose several embodiments of the invention, it
will be evident that numerous changes may be made in such
details and certain features may be used without others
without departing from the principles of the invention.
Cf. T.C. Macllvaine, J. Biol. Chem. 49, 183 (1921); C.J.
Schollenberger, The Chemist-Analyist, 19 No. 3, 8 (1930).
2 "Span" is the registered trademark of Atlas Chemical
Industries, Inc. for a series of non-ionic surface active
agents which are long chain fatty acid partial esters of
hexitol anhydrides, including sorbitans, sorbides, mannitans,
and mannides.
2 "Tween" is the registered trademark of Atlas Chemical
Industries, Inc. for a series of non-ionic surface active
agents which are polyoxy alkylene derivatives of hexitol
anhydride partial long chain fatty acid esters.
3. The method of making an electrically conductive
system for use in making electrocardiograms, electroen
cephalograms and the like, comprising providing an aque
ous solution of an emulsified material of a non-ionic type;
controlling the electrical conductivity thereof by adding a
highly ionizable salt; and adding a buffer solution to
provide a pH of between substantially 4 to 8.
4. The method claimed in claim 1, 2 or 3, wherein the salt
comprises about 1 to 10% of the system.
5. The method claimed in claim 1, 2 or 3, wherein the salt
is selected from the group consisting of sodium chloride,
potassium chloride and sodium sulfate and comprises
about 1 to 10% of the system.
11. The method of making an electrically conductive
system for use in making electrocardiograms, electroen
cephalograms and the like, comprising providing an aque
ous solution of an emulsified material of a non-ionic type;
and controlling the electrical conductivity thereof by
adding a highly ionizable salt.
12. The method claimed in claim 9, 10 or 11, wherein the
salt comprises about 1 to 10% of the system.
13. The method claimed in claim 9, 10 or 11, wherein the
salt is selected from the group consisting of sodium chlo
ride, potassium chloride and sodium sulfate and comprises
about 1 to 10% of the system.
17. An electrocardiograph cream for use with skin con
tact electrodes and compatible with normal skin, compris
ing a stable aqueous emulsion that is anionic, cationic or
non-ionic and containing sufficient highly ionizable salt to
provide good electrical conductivity.
18. An electrocardiograph cream as claimed in claim 17,
wherein the salt comprises about 1 to 10% of the whole.
19. An electrocardiograph cream as claimed in claim 18
and having a pH between about 4 and 8.
21. An electrocardiograph cream as claimed in claim 19,
wherein the salt is selected from the group consisting of
sodium chloride, potassium chloride and sodium sulfate.
22. An electrocardiograph cream as claimed in claim 17,
wherein the emulsion is non-ionic.
Reading the specifications and claims togeth
er it is my view that the claims in issue are
limited to an electrically conductive system:
1. for use in making electrocardiograms and
electroencephalograms;
2. that are composed of an aqueous emulsion
having a base of an anionic, cationic or non-
ionic material with the addition of 1-10% of a
highly ionizable salt and in respect of some of
the claims with the addition of a buffer solu
tion such as to produce a pH of between 4 - 8
and in some of the claims the addition of
suitable inhibitors such as esters of para -
hydroxy, and benzoic acids to prevent the
growth of bacteria, molds or yeast;
3. that the materials to be used are only such
of those materials within the general classifi
cations as will be compatible with normal
human skin and can be readily applied and
readily removed without any resulting condi
tions requiring cleansing.
I think that these limitations as to the use of
the invention and the limitation as to the materi
als to be used are an answer to the appellants'
submission that among the classifications of the
materials referred to there are some that would
be dangerous to use on the human skin. The
patent does not claim that any emulsion or any
highly ionizable salt could be used.
As to the submission that "highly ionizable
salt" is an ambiguous term, I do not think that it
is. The expert, Dr. Shansky, gave a definition of
the term and merely because it was admitted
that there could be some salts as to which
experts might differ as to whether they fell
within the definition, a question of fact, does
not alter the fact that there were numerous salts
that fell within the definition and the patent was
limited to such salts.
"Compatible" is defined in Murray's English
Dictionary as
Mutually tolerant; capable of being admitted together, or
of existing together in the same subject; accordant, con
sistent, congruous, agreeable; ... which can abide or
agree together; ... if any of them do affront or
injurie... .
In Webster's dictionary,
... capable of existing together in harmony; congenial,
agreeable; .. .
(as an adverb)
... in a compatible manner, fitly, suitably .. .
"Emulsion" is defined in Murray's English
dictionary (in pharmacy)
A milky liquid consisting of water holding in suspension
minute particles of oil or resin by the aid of some albumi-
nous or gummy material.
In the case of Henriksen v. Talion Ltd. (1965)
R.P.C. 434 in which the validity of the patent
was upheld, the claim in issue was:
1. A fountain pen of the ball tip type, comprising a
tubular ink reservoir provided at one end with a ball tip
and at the opposite end with an air inlet, in which there is
disposed between the column of ink in the reservoir and
the air inlet a liquid or a viscous or paste-like mass which
does not mix with the ink and forms a plug which moves
with the surface of the ink column and prevents air from
contacting the surface of the ink.
The broad general classifications of "a liquid
or a viscous or paste-like mass" are limited to
such of those materials as will form a plug that
will not mix with the ink and will form a "plug
which moves with the surface of the ink column
and prevent air from contacting the surface of
the ink".
In the present case reading the specifications
and claims together it seems to me to be clear
that the materials to be used are only such of
those, coming within the general classifications,
that will be compatible with the normal human
skin and can be applied and removed without
cleansing.
At page 441 of the Henriksen case Lord Reid
said:
The patentee is representing to the Crown in seeking the
patent and telling the skilled addressee after its publication
that if the skilled addressee follows his directions he will
produce an instrument that is useful at least in the sense that
it will work. He is entitled within fairly wide limits to leave
it to the addressee to choose appropriate material from a
class which he specifies if he makes it plain that the choice
is left to the addressee. In the present case it is not disputed
that the patentee can properly leave it to the addressee to
choose out of the specified class or classes of material
something which (a) does not mix with the ink and (b) forms
a plug which (i) will move with the surface of the ink and (ii)
will prevent air from contacting the surface of the ink. The
question is what is the class or what are the classes of
material which he has specified. The specification says that
there is to be put between the ink and the air "a liquid or a
viscous or paste-like mass".
... it is well settled that whether the issue be validity or
infringement the first step is to construe the claim. It is
addressed to the skilled man who is acquainted with the
prior art, so all relevant information about that must be
supplied to the court and borne in mind when construing the
claim.
At page 442 Lord Reid referred to the case of
Norton & Gregory Ld. v. Jacobs (1937) 54
R.P.C. 271 (in which the patent was held to be
invalid) as follows:
I do not think that the decision created any new law.
There the addressee, the skilled chemist, was plainly told
that he could use a reducing agent. Some reducing agents
were effective to produce the required result but others
were not; and among those not effective were some which
were expressly recommended in the body of the specifica
tion. It was impossible to construe the claim as leaving to
the addressee the choice of a suitable reducing agent, and
I need not consider whether a different claim could have
been validly made. The decision was that if a claim
represents that any reducing agent can be used, and it
turns out that some cannot, the claim cannot be saved
because the addressee would know which could and
which could not be used and would avoid using those
which are ineffective.
I do not propose to refer on this aspect of the
appeal to the other numerous cases to which we
were referred by counsel and the cases referred
to in Fox on Patents as in my view the appli
cable principles of law are not in dispute and
this case falls to be decided on the application
of those principles to the facts as found by the
learned trial judge and the interpretation of the
wording of the specifications and claims in
Patent No. 734862.
In the present case the patentees in their
specifications and claims do not say that any
highly ionizable salt or any aqueous emulsions
may be used. They specify or clearly infer that
the persons skilled in the art are to select from
the general classifications of materials only such
of those materials as would be effective for the
expressed purpose and use of the invention
which limited the selection to only such of the
materials in the classes named as would be
compatible with the human skin and which
could be readily applied and removed without
any resulting condition requiring cleansing.
It is my view that the specifications and
claims are sufficient to comply with the require
ments of section 36(1) of the Patent Act and
that a person skilled in the art would not be left
in any doubt as to the materials, their propor
tions and their consistency that he should use in
preparing the invention.
It is to be noted that while it was argued that
the specifications and claims do not specify the
consistency of the emulsion and that there was
evidence that if the emulsion was too thin or too
thick it would not be effective, that this ground
of appeal was not pleaded by the appellant.
Turning now to the grounds of appeal
a) that the original patent was invalid
b) that the re-issued patent itself is invalid
and
c) that the requirements of section 50 of the
Patent Act for the granting of a re-issued
patent were not complied with and the re
issued patent is therefore invalid.
As to the submission that the requirements of
section 50, subsection (1) of the Patent Act
were not complied with in respect of the re
issued patent I am in agreement with the rea
sons and conclusions of the learned trial judge.
The application for re-issue was made within
the time prescribed for making the application.
The corrections and alterations of the original
patent made in the re-issued patent were made
in the corresponding American patent, which
was issued prior to the original Canadian patent,
prior to its issue. The patent attorneys failed to
make the corrections in the application for the
original Canadian patent. On the evidence it was
open to the Commissioner of Patents and to the
learned trial judge to conclude that the omission
to correct errors in the original Canadian patent
arose by reason of inadvertence on the part of
the applicant's attorneys. For these reasons and
those of the learned trial judge I would dismiss
the appeal with costs.
JACKETT CJ.:
1 See Fox on Canadian Patent Law and Practice, 4th ed.,
at pages 195-96:
The principles applicable to claims were discussed by
Thorson P. in Minerals Separation North American
Corpn. v. Noranda Mines Ltd., [1947] Ex.C.R. 306 at
352; [1950] S.C.R. 36; 12 Fox Pat. C. 123: "By his claims
the inventor puts fences around the fields of his monopoly
and warns the public against trespassing on his property.
His fences must be clearly placed in order to give the
necessary warning and he must not fence in any property
that is not his own. The terms of a claim must be free
from avoidable ambiguity or obscurity and must not be
flexible; they must be clear and precise so that the public
will be able to know not only where it must not trespass
but also where it may safely go. (See United Merchants &
Mfrs. Inc. v. A. J. Freiman Ltd. et al., (1965) 30 Fox Pat.
C. 206 at 216.) If a claim does not satisfy these require-
ments it cannot stand. (Reference to the words of Lord
Loreburn in Natural Colour Kinematograph Co. Ltd. v.
Bioschemes Ltd. (1915), 32 R.P.C. 256 at 266; Ibid. at
269, per Lord Parker; General Railway Signal Co. Ltd. v.
Westinghouse (1939), 56 R.P.C. 295 at 382; Whatmough
v. Morris Motors Ltd. (1940), 57 R.P.C. 177 at 198.) .. .
The inventor may make his claims as narrow as he pleases
within the limits of his invention but he must not make
them too broad. He must not claim what he has not
invented for thereby he would be fencing off property
which does not belong to him. It follows that a claim must
fail if, in addition to claiming what is new and useful, it
also claims something that is old or something that is
useless." (Vidal Dyes Syndicate Ltd. v. Levinstein Ltd.
(1912), 29 R.P.C. 245 at 268, 270; Natural Colour
Kinematograph Co. Ltd. v. Bioschemes Ltd. (1915), 32
R.P.C. 256 at 266, 268).
2 This appears from paragraphs 19(a)(î) and 29(a) of the
affidavit of Dr. Shansky and his evidence on cross-examina
tion and re-examination.
3 It is true that section 36(1) requires that the disclosure
describe the invention so as to enable "any person skilled in
the art or science" to make, construct, compound or use it.
In this sense the specification is directed to a person skilled
in the art. It does not, however, mean that the specification
means what it would mean to a person skilled in the art or
science. See Northern Electric Co. Ltd. et al. v. Photo Sound
Corporation et al., [1936] S.C.R. 649, per Duff CJ., deliver
ing the judgment of the Court, at pages 676 et seq. Note
particularly that the expert witness (i.e., the person skilled in
the art) can give evidence as to the state of the art at any
time, as to the meaning of technical terms, as to whether in
his opinion what is described in a specification "on a given
hypothesis as to its meaning" can be carried into effect by a
skilled worker, or as to what at a given time to him as skilled
in the art, a given sentence "on any given hypothesis as to
its meaning" would have taught or suggested to him, but he
cannot give evidence as to what the specification means or
as to what it means to him as a person skilled in the art.
4 The suggestion by counsel for the respondents that this
reasoning could be limited to cases where there were false
promises in the disclosure is negatived by the next para
graph of Lord Greene's judgment, which reads as follows:
In the present case if the Patentee had intended to
include every reducing agent in his claim, no language
could have been more appropriate for his purpose than
that which he has used and we can see no justification for
limiting that language in the way suggested. But there is a
further reason—if a further reason were required—for
rejecting the argument. The Patentee himself, in a passage
already quoted, gives as examples of suitable reducing
agents "aldehydes" and "poly-hydroxy compounds".
Many of the substances in these two classes (e.g. in the
former the higher aldehydes, in the latter certain of the
sugars) are unsuitable for use, yet the words are wide
enough to cover all of them, and upon the Appellants'
argument it would be necessary to read into them words
which would operate to exclude certain members of these
classes. Such a method of construction is in our opinion
quite unwarranted.
See, for example, Ingersoll Sergeant Drill Company v.
Consolidated Pneumatic Tool Company Ld., (1908) 25
R.P.C. 61, per Lord Loreburn L.C. at pages 82-3:
There can be no dispute about the law. Each Claim in a
Specification is independent, and a plaintiff in an action
for infringement must show that there has been an adop
tion of some new invention adequately described in a
Claim when fairly construed. I am not aware that any
special canons of construction are applicable to Specifica
tions, nor am I able to accept, if indeed I rightly under
stand them, certain formidable generalisations presented
to us in argument as to the principles on which they are to
be interpreted. Obviously, the rest of the Specification
may be considered in order to assist in comprehending
and construing a Claim, but the Claim must state, either
by express words or by plain reference, what is the
invention for which protection is demanded. The idea of
allowing a patentee to use perfectly general language in
the Claim, and subsequently to restrict, or expand, or
qualify what is therein expressed by borrowing this or that
gloss from other parts of the Specification, is wholly
inadmissible. I should have thought it was a wholly origi
nal pretension.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.